Federal Circuit Refuses to Require Examiners to Articulate a Claim Construction as Part of the Examination/Rejection Process

In re Jung (Fed. Cir. 2011)

Ed Jung is a co-founder of intellectual ventures and Dr. Lowell Wood is a world renowned technologist. In 2004, the pair filed a patent application for a photo-detector array system. The examiner rejected the claims as obvious and the BPAI affirmed. Jung appealed to the Federal Circuit arguing that “(1) the examiner failed to make a prima facie case of anticipation, and (2) the Board acted as a ‘super-examiner’ by performing independent fact-finding and applying an improperly deferential standard of review to the examiner’s rejections.”

Prima Facie Case: The patent office has the initial burden of presenting a prima facie case of invalidity. A prima facie case is adequately articulated by notifying the applicant of the reasons for its rejections so long as the explanation is not “so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574 (Fed. Cir. 1990). This requirement comes straight from Section 132 of the Patent Act. 35 U.S.C. §132(a).

Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application.

Once a prima facie case is presented, the burden shifts to the applicant for rebuttal.

In Jung, the Federal Circuit ruled that the examiner presented a prima facie case of invalidity based on his explanation that Jung’s broadly drafted claim encompassed the prior art.

Here, the examiner’s discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.

In the appeal, Jung argued that the articulation of a prima facie case should involve more than the notice of rejection outlined in § 132. Jung asked for a claim construction of the disputed claims – similar to what would be required of a court. The Federal Circuit rejected that argument – seeing “no reason to impose a heightened burden on examiners beyond the notice requirement of § 132.”

There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. “[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence.” Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. As the statute itself instructs, the examiner must “notify the applicant,” “stating the reasons for such rejection,” “together with such information and references as may be useful in judging the propriety of continuing prosecution of his application.” 35 U.S.C. § 132. Here, the examiner’s discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.

Jung’s argument was clearly a long-shot in this case and not well presented if the sole intent was to make sure that Jung gets this patent. Of course, Intellectual Ventures is now one of the largest patent holders in the world and its actions are almost always strategic in nature.

165 thoughts on “Federal Circuit Refuses to Require Examiners to Articulate a Claim Construction as Part of the Examination/Rejection Process

  1. ohhh ohhh – he called me a name – must mean that his side O the argument is over.

    That and without an answer on the burden O persuasion.

    What a tool!

  2. Pingertard, he can show me in any number of different ways. He can show me his fellow’s work. He can show me his own work. He can show me work of strangers. I don’t give a dam. Bottom line is, he doesn’t get OA’s like I posted above and he knows it.

    The point I was making was that he was contorting what is going on in the cases which he raises as a hypo.

    What is happening are mistakes of substance not procedure. That is, what is actually happening is the examiner either ignored/missed/falsely indicated a limitation in the claim or did not set forth the rejection sufficiently for you to be put on notice of the grounds of rejection. If they ignored it then the response is simple. Say they ignored it and that you see no reason why it would be ignored. When they come back explaining to your dum b arses that it was some intended use limitation or some nonsense like that then deal with your justly earned final accordingly. Say they missed it. Again, the response is simple. Point out that they missed it. Note you can even combine this response with the previous response for super duper awesome responses. Note also that for either of these responses you don’t even need to cite a page of caselawl citations. If the limitation is missing and it was a duly limiting structural limitation or whatever then fine, the pto will correct the issue or you can go to appeal and win. Say the PTO falsely indicated a limitation as being met by this or that element in the reference. Fine. The response is simple, state that you don’t think that limitation is met by x feature in the reference and explain why. Note, again, that you don’t even have to cite a page or so of caselawl. Finally, if they just didn’t write it out sufficiently for you to be put on notice then put that in your OA. When it comes back as a final because the office regardds you as a retard who needed extra hand holding then don’t blame me. But, most examiners will probably give you a non-final out of pity. If it comes back as final and you still think the first one was not sufficient after things have been clarified then petition the finality of the office action due to the first one being insufficient to put you on notice. When the director denies your petition then go cry in a corner because you’re a big fat loser. Or, alternatively, you can appeal, and probably have the board and Fed tell you to stfu or petition the finality.

    End of mo fin’ story. Je sus.

    I also note that sure, one time in a hundred thousand some new examiner will be confuzzled about what he needs to set forth to put the applicant on notice and shift on the burden and the spe will sign off on it and it will then be signed off on as being final. Those cases are also very easy to spot, they look something like the example I set forth in the previous post. And you can deal with them by stating that a reference which does not contain all elements does not make a prima facie case and that the examiner having mistakenly believed so is in err. You can also appeal these cases and WIN, both now and prior to this decision.

  3. Saying it doesn’t make it so.”

    Not relevant, pingaling, because in this instance I merely observed a fact: “6 just showed everyone exactly why your lover du jour BB is full of shxt.”

    That was followed by another observation of a fact: my comment was directly related to your comment to 6.

    And like I’ve been saying, pingaling, you keep denying these facts because: YDAAFR.

  4. Again with the improper use of “obtuse” Chowder boy.

    No, I think he has it just about right.

  5. Uh…. no. I’ll say it again

    Let me throw a quote atcha from your new BFF:

    Saying it doesn’t make it so.

    Also let me point out that ya be copying your BFF and not answerin questions put to you, specifically:

    soooo, my pointing out 6′s desire ta have BB out himself has… what relation to what ya say about me bein “full of shxt” exactly?

    Let me guess – you gonna start copying me and my Homey dont do answers TOO?

  6. Again with the improper use of “obtuse” Chowder boy.

    And if you and Sunshine would actually take notice – my initial reply was in fact directly as to how you now have clarified things. I posted afterwards in order to check my assumptions – obviously something neither you nor your BFF Sunshine ever do.

    Sorta like checking a record before blatently challenging someone on that record, eh Sunshine (talk abouts dxmb as a fxcking rock).

    That aint blue – that be egg on your faces.

    But hey, keep bringin the chuckles boys.

  7. You were the only one who was confused, pingaling. And that’s because you’re dxmb as a fxcking rock.

  8. pingaling 6′s desire ta have BB out himself

    Uh…. no. I’ll say it again: you’re dxmb as a fxcking rock, pingaling.

  9. So you’re incapable of reading the actual post and figuring out that the directive to grow up was directed to chicken littles such as yourself? You’re pretty obtuse.

  10. I was telling you and the rest of the chicken littles to grow up

    That might be more effective if ya then actually post in reply to the right person. As is evident above, ya replied ta 6.

    Just an observation.

  11. oooo kaaaay.

    soooo, my pointing out 6′s desire ta have BB out himself has… what relation to what ya say about me bein “full of shxt” exactly?

    Not only is it notAnd for the same reason” – there be no reason.

    Your desire ta have me “Keep digging” must only then be for me to try ta reach ya. That must be one deep hole ya be in there Pally.

    But hey, keep the chuckles flowin there Sunshine.

  12. I was telling you and the rest of the chicken littles to grow up. Of course, the fact that you’re so amused by your own baby talk probably means that’s an unlikely development.

  13. pingaling, go right ahead and call up your imaginary “med check”.

    what ya say has no relation at all to what I done say

    Except that what I said is directly related to what you said, pingaling.

    Keep digging.

  14. ohhhh – handwaivy fluffy stuff – thanks Sunshine.

    Cepts what ya say has no relation at all to what I done say, what 6 done say or what Babbles done say. Other than that, ya still be fluffy.

    Shall we call yet another Med check for you?

  15. Talk about being deliberately obtuse

    How on God’s green earth is that obtuse? Ya be tellin 6 ta grow up and evidently that be a division between you and your new BFF.

    Do you even know what “obtuse” means? Have ya succumbed to the Med trading practices of your new BFF? Methinks you may be beyond salvage.

  16. Actually, ping, 6 just showed everyone exactly why your lover du jour BB is full of shxt.

    And for the same reason, you are full of shxt.

  17. Talk about being deliberately obtuse. Though I’m not sure it’s deliberate in your case.

  18. Lolz at me – I didnt recognize that ya be tellin your new BFF 6 ta grow up.

    Oh the divisions have started…

  19. How about the OA that states, “Claims 1-20 are rejected as clearly anticipated by Smith”?

    I can hear the chicken littles now, “The burden hasn’t been shifted!!! The sky is falling!!!! Somebody please explain everything to me!!!!! My command of prosecution practice isn’t even cursory!!!!!”

    Grow up.

  20. Ah yes, the Ol Out-Yourself-With-Specific-Example request.

    6 copying Sunshine – how sweet.

    6, Howza bouts you first? Post your real name so’z we all can look at your real work.

    For some reason, I just dont see ya jumpin all over that opportunity.

  21. “What I am saying is that Linn’s opinion appears to cut off purely procedural appeals, for instance where examiners enter 102 rejections on the grounds that a few but not all of the elements/limitations are met by the PA, i.e., no prima facie case.”

    When have you ever received an OA where the examiner said something to the tune of:

    Claims 1-10 are rejected under 35 U.S.C 102(b) by Patent et al. US XXXXXXX dated XX/XX/XX.

    For claims 1-10 patent et al. shows in Fig. 3 and at col. 15, lines 50-60 a bicycle comprising a pedal 5, a seat 10 and a reflector 20 but does not show the reflector being shaped as a trapezoid as required by the claims.

    SINCE WHEN DID YOU START RECEIVING SUCH A REJECTION FROM THE PTO BB? HMMM? AND SINCE WHEN DID LINN TELL YOU NOT TO APPEAL SUCH A REJECTION?

    please to be showing.

  22. “Linn is saying that the applicant does not have any right to challenge by appeal a lack of prima facie case before having to substantively respond to the merits.”

    J. Linn never said that.

    “And I’m saying that is outrageous.”

    Saying it doesn’t make it so.

  23. Babbles,

    Dontcha get it? You’ve been labeled a “chicken little” so the debate is over and the other side aint gotta answer any questions.

    Geesh, did ya lose your first grade manual of how to argue the Sunshine/6/wtvlfdt way?

  24. BB Linn’s opinion appears to cut off purely procedural appeals

    It “appears” to do so? Tell us more, Chicken Little. Maybe cite the passage you are referring to, where Linn “appears” to “cut off” “procedural appeals.” And please define these latter terms that I’ve put in quotes so we can all understand how dire the situation is.

    Fact is, I can’t see why I should give a crxp about this case. Maybe it applies only to those art units where prosecution is nothing but procedural wankers gnashing their teeth because nobody (including the Examiner) cares to apply the facts.

  25. You folks are not getting it.

    As I clearly said, I am not arguing that it’s the wrong outcome. Try to think past the facts of this particular case and into the warped future this decision is taking us. Forget the freekin’ controller. The controller is not the problem; Linn is the problem.

    What I am saying is that Linn’s opinion appears to cut off purely procedural appeals, for instance where examiners enter 102 rejections on the grounds that a few but not all of the elements/limitations are met by the PA, i.e., no prima facie case.

    Linn is saying that the applicant does not have any right to challenge by appeal a lack of prima facie case before having to substantively respond to the merits. And I’m saying that is outrageous.

    It’s like saying that if the prosecutor ignores 2 of the 4 elements of the crime, the defendant must nevertheless answer to the evidence that was never presented on elements that were never charged.

    Under Linns’ opinion, the applicant has to answer to the merits of a rejection that is procedurally botched for lack of PFC.

    This opinion is a wtdream come true for examiners the likes of 6.

  26. “Particualrly, ya never seem ta come straight out and address the very thing I noted (in an original post mind you) was lacking in the CAFC opinion.”

    Uhm, that’s because there’s nothing lacking in the opinion. J. Linn got it right. Only those who lack a cursory command of prosecution practice think there’s something lacking.

  27. …and your moniker of choice be so approppriate for you, “late riser“.

    I be the one with the pointy stick. I be the one chucklin at the Man Who Answers But Doesnt. I be the one who laughs at the one who is now BFF with 6 and Sunshine.

    It be a splendid day. Anyone can see that. Try actually waking up first “late riser” and then join the chuckle brigade.

  28. Chuckle city today baby!

    You’ve never been more correct. But you were one of those kids who couldn’t tell the difference between being laughed with and being laughed at, aren’t you?

  29. Asked and answered. Go back and read any of my posts on this topic.

    Um, no. Ya never really get to the meat of the question as to what specifically does it take to establish a Prima Facie case.

    Particualrly, ya never seem ta come straight out and address the very thing I noted (in an original post mind you) was lacking in the CAFC opinion.

    Let’s see ya try to cliimb back to respectability and address these things, m’boy.

  30. somebody else will quote you.

    Been there – done that.

    Try again at reading my boy – I done shown that the boys with the i4i briefs basicly lifted many O my observations.

    Let’s see – you ahve shown zilch and I have shown that you are zilch.

    Chuckle city today baby!

  31. “Uh, let me guess, somebody J. Linn described as lacking even a cursory command of prosecution practice?”

    I loled.

  32. Asked and answered. Go back and read any of my posts on this topic.

    “thats right – me quoting me”

    You do a lot of that. Maybe some day you’ll actually post something intelligible and somebody else will quote you.

  33. “Now look at those in my camp – the esteemed HMS Boundy, EG and those that know that you dont know crrp.”

    Haven’t heard from the HMS Boundy in awhile. I wonder if he’s sailing on the bottom o’ the ocean now?

  34. You’re describing yourself

    cepts one thing bucko – I’m not. That’s the beauty of the Homey dont do answers hook.

    You dont have that hook.

    Massive FAIL in your logic.

    Try again.

    Unless, you now be copying me and trying to institute such a hook for yourself…

    …which O course, means that you yet again would be:
    Nice chowder head – cepts I havent changed my tune and you have.

    Its okay to admit your mistakes.
    Reply Apr 04, 2011 at 11:39 AM

    thats right – me quoting me slamming you. You be a regular chuckle factory today chowder boy.

    O and by the by, let me point out that you still haven’t answered: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).

    I keep chuckling at your inability to answer.

  35. “For someone to attempt a slam on non-answers, your lack thereof speak to a critical deficiency.”

    You’re describing yourself.

  36. Uh, let me guess

    BZZZZT – wrong.

    Thanks for playing.

    Clearly you do.

    BZZZZT – wrong.

    Thanks for playing.

    Ya see chowder boy, this be fun for me, making fun of you. And let me point out that you still haven’t answered: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).

    For someone to attempt a slam on non-answers, your lack thereof speak to a critical deficiency. As long as ya keep ignoring this, I get to keep chuckling at ya.

    And you dont even have teh “Homey dont do answers” hook.

  37. “I just dont care if you care or not.”

    Clearly you do. That’s why you’re posting two responses to every one of mine.

    “Dontcha know who ya be talkin too?”

    Uh, let me guess, somebody J. Linn described as lacking even a cursory command of prosecution practice?

  38. You forgot to ask me if I care if you care.

    Um, no.

    I just dont care if you care or not. Dontcha know who ya be talkin too? Are ya now inta the Med mixing parties with your new friends?

    Kids, let this be a lesson to ya’ll – Just say No.

  39. Lolz atcha chowder – look what ya been reduced to.

    And still ya haven’t answerd: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).

    Hmmm, I wonders why that could be…?!

  40. Ya forgot to ask me if I care what you think.

    And still ya haven’t answerd: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).”

    And you dont even have teh “Homey dont do answers” hook.

    So what is your reason for not giving an answer, chowder?

  41. Congratulations, you’ve surpassed Mooney as this site’s biggest bore.

    Now I understand why you “don’t do answers.” You don’t have any.

  42. Whatever

    Chuckle city there pal – is that your way of actually addessing the question I done put to you?

    Once again: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).

    And once again – ya be assumin things like gettin applications allowed – which aint nowherre relevant in the discussion on point. But ya be learning some nifty tricks from your new friends.

    I be curious if ya be the windmill-in-the-head or the horse-hoofs-in-the-head type.

    ps – ya gotta little blue stuff on ya there.

  43. Whatever, Chicken Little. Keep running around yelling at the top of your lungs that the sky is falling. Those of us that know differently will carry on getting our applications allowed.

  44. Will someone please find my main man IANAE?

    The cabal of horsemen or growing increasingly restless with his absence.

  45. Bite me.

    Enjoy your company. Even you quibbled above with 6 – now you turn and sayhe was correct.

    That aint flyin, chowder.

    Note the typical move by Sunshine – projectiing his own “WAAAAAAHHHH! WAAAAAAHH!!!“.

    Thems be your company.

    Now look at those in my camp – the esteemed HMS Boundy, EG and those that know that you dont know crrp.

    Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).

    And by the by, I see you being obtuse again and claiming that “incapable of making your own independent” – Try again chowder – you be seein that my observations be like gold once again and that others be takin to my observations (not the other way around).

    Like I done told Sunshine in the i4i brief writings – those following my views be golden.

    I be too lazy to post this again in 13 minutes *the attention span of Sunshine, and most likey you too now that ya be all obtuse, so just come back again in a little bit and re read my observations.

  46. “Why you’re not upset with the prosecutor is troubling.”

    It is because that is how he likes to prosecute. Relying on the examiner’s unwillingness to go to the board to get an allowance or another piece of art.

  47. Babel Boy, I endorse the comments of both 6 and wtvlfdh. The examiner met his burden by citing the reference against the claims (and the statute.) He actually doesn’t have to explain in detail.

    The burden then shifts. The applicant here had to do more than just say the reference does not have an element, he has to explain why if it is not apparent on its face.

    The later argument by the applicant on appeal that the claimed element had so and so features, none of which were actually in the claim, is justified, if at all, only as an argument about claim construction. Must the element be construed in this manner?

    Obviously, under BRI, the examiner does not limit the claim to the corresponding structure. The applicants here seem to have assumed that BRI required that the claim be so limited. But, that is a court way of construing functional limitations, the kind we have here. It is not BRI.

    Given the argument, I would have expected some argument from the applicant that the BRI required the construction they were proposing. Instead, I saw no such argument in this case.

  48. Malcolm and 6 both understand the decision and the impact of this case. You do not.

    The fact that you automatically assume that Malcolm and 6 are incorrect, and are incapable of making your own independent assessment other than, “Well, if Malcolm and 6 like it, therefore it must be bad” speaks volumes about you. And what it says isn’t very complementary.

  49. View: Unfortunately, it doesn’t translate too well for the rest of us.

    I can translate most of ping’s comments in this thread pretty well: “WAAAAAAHHHH! WAAAAAAHH!!!”

  50. When “the rest of us” includes you, 6 and Sunshine – be afraid, be very afraid.

    Like I done told you – step out of your new BFF reading club.

    Try again chowder.

  51. “O I have said plenty coherent…”

    You’re the only one who seems to think so. I’m sure it’s all coherent to you. Unfortunately, it doesn’t translate too well for the rest of us.

  52. You haven’t said anything coherent yet.

    O I have said plenty coherent – you just need to stop hangin out with the reading club of 6 and Sunshine.

    Try again chowder.

  53. “Throw a little more detail into your explanantion of what this actually means and you be repeating what I already done said.”

    You haven’t said anything coherent yet. But if you want to agree with what I’ve been saying all along this thread, then all I can say is: welcome to the light.

  54. perfectly free to respond that the examiner hasn’t presented a prima facie case

    Now you be coming around wtvlfdt.

    Throw a little more detail into your explanantion of what this actually means and you be repeating what I already done said.

    Btw – nice badge.

    Badges? We don’t need no stinking badges

  55. “In this case the gap, if there was one, was subtle — the examiner’s conclusory statement that the controller was met by the disclosed controller without saying how.”

    There was no gap in this case. The dolt who prosecuted it added a limitation (“a well-charge-level controller operably coupled to…”) with ZERO limitation on the structure and/or function of the controller and he was told quite plainly that it was met by Kalnitsky’s controller 340. The dolt then proceeded to argue a boat load of limitations that weren’t actually claimed, he was told his arguments weren’t persuasive, which they weren’t, and he decided to appeal. Very sloppy and crxppy work.

    Why you’re not upset with the prosecutor is troubling.

    “…it’s that Linn’s new rule is a bllbuster for competent prosecutors and is honey for PTO sloths”

    There is no new rule. If the examiner does not address every limitation/element/feature in the claim, you are perfectly free to respond that the examiner hasn’t presented a prima facie case, complied with section 132 or Rule 104, etc. If you are correct, the examiner will either have to redo the OA, or allow the application. You may have to appeal. You may have to petition. But faced with a slothful examiner you had to do those things before this decision, and you’ll stil have to do them after this decision.

    If the examiner determines that you’re claimed “well-charge-level controller” is met by the “controller 340 of Kalnitsky” then you have to explain why it is not. Same as before this decision. Same as after this decision.

    No change whatsoever in the law.

    Here’s a tip: if you’re going to explain why the element/feature/limitation of a reference pointed out by the examiner doesn’t meet your claimed element/feature/limitation, make sure your claim actually includes something you can hang your hat on.

    Same as before this decision. Same as after this decision.

  56. You are a work of art. . . in the same sense that my dogs see cow pies as perfume.

    Oh, look, we’re coming up on a century.

  57. “In at least two thirds of the 102 rejections I get, the dolt examiner has not entered a single comment or hint as to at least one element or limitation in the base claim. ”

    And your point is what?

    “Almost always, it’s a major discriminating limitation.”

    Discriminating? The limitation discriminates against you?

    “Even if the examiner has meticulously explained how 50 claimed elements are met by the reference, if he misses just one, there is no PFC”

    Lulz, idk about that one bucko.

    “Linn is wrong, and dangerously wrong, to set forth a rule that I do not have a right to appeal a botched rejection on procedural grounds.”

    Should have asked to be able to petition. Since it is a procedural issue.

    “I am entitled to appeal any purely procedural decision that adversely affects my client’s right to a patent without answering to any of the merits of the OA. ”

    You’re entitled to appeal and have the board cite you this decision lulz.

    “That is because a 102 rejection is not valid unless and until the PTO sets forth how each and every element/limitation has been met.”

    Lulz, I doubt it.

    “Les is also right about the compact prosecution.”

    The most compact prosecution involves a rejection that is no more than a sentence long.

    “In the old days (and currently in every other country in the world I know of) one could answer to the procedural flaws in an OA and the examiner could then revise the rejection so that it at least mentioned each and every element/limitation. ”

    In the “old days” you got a one page form that generally pointed you to the right embodiment and maybe a few limitations.

    “In practice, I find that when I respond to the FOAM on strictly procedural grounds because the examiner has ignored 25% of the claim, and when I make it clear I will appeal, I usually get a second non-final. ”

    Well you’re pretty lucky. Thankfully now you’ll get a final! :)

    “Linn’s misguided prescription changes that”

    And thank god for that.

    “It promotes examiner sloth and incompetence that is already too prevalent.”

    What better decision could we have?

    “Mind you, I am talking about instances where the gaps Linn is talking about are conspicuous. ”

    Maybe you should appeal one of those cases all the way to the fed circ. Oh wait, looks like you can’t, because the PTO already fixes the problem for you prior to appeal, so you can stop your whining.

    “But my point is not that the outcome of this case was bad; it’s that Linn’s new rule ”

    It’s not a “new rule” it is the old rule laid out for you.

    “and CAFC sloths who don’t want to deal with procedural issues.”

    You could always sue them.

  58. Careful Babbles, ya gonna get chowderhead wtvlfdt and his new BFFs 6 and Sunshine comin back atcha in an obtuse way (even though you done been up front and clear that this particular fact pattern aint worth a hill O beans).

    Rev up the chuckle wagons and here we go.

  59. Les is absolutely spot on correct.

    The issue is not whether the prior art in this case meets the claim. The issue is procedural — whether the examiner has made a sufficient explanation of how each and every element of the claim is set forth in the prior art and in the same way as set forth in the claim. I call this the All Elements Rule II. It derives from the principle that what anticipates before infringes after.

    This is a very pernicious and dangerous CAFC decision, it will muck the system up for years. More precisely, Linn’s assertion that the applicant does not have any right to procedurally challenge and appeal a lack of PFC before having to substantively respond to the merits is outrageous.

    In at least two thirds of the 102 rejections I get, the dolt examiner has not entered a single comment or hint as to at least one element or limitation in the base claim. Zilch. Almost always, it’s a major discriminating limitation.

    Even if the examiner has meticulously explained how 50 claimed elements are met by the reference, if he misses just one, there is no PFC. No burden has shifted to me, the case has not been made, and I have no obligation to address the 50 elements he did suss.

    Linn is wrong, and dangerously wrong, to set forth a rule that I do not have a right to appeal a botched rejection on procedural grounds. I am entitled to appeal any purely procedural decision that adversely affects my client’s right to a patent without answering to any of the merits of the OA. That is because a 102 rejection is not valid unless and until the PTO sets forth how each and every element/limitation has been met.

    Les is also right about the compact prosecution. In the old days (and currently in every other country in the world I know of) one could answer to the procedural flaws in an OA and the examiner could then revise the rejection so that it at least mentioned each and every element/limitation. Not so now.

    In practice, I find that when I respond to the FOAM on strictly procedural grounds because the examiner has ignored 25% of the claim, and when I make it clear I will appeal, I usually get a second non-final. If I get a final, I file an appeal notice within a day, if possible, and I get the case re-opened 100% of the time.

    Linn’s misguided prescription changes that. It promotes examiner sloth and incompetence that is already too prevalent.

    Mind you, I am talking about instances where the gaps Linn is talking about are conspicuous. In this case the gap, if there was one, was subtle — the examiner’s conclusory statement that the controller was met by the disclosed controller without saying how. But my point is not that the outcome of this case was bad; it’s that Linn’s new rule is a bllbuster for competent prosecutors and is honey for PTO sloths — and CAFC sloths who don’t want to deal with procedural issues.

  60. ping, “as a whole” is an obviousness concept, not a novelty concept.

    If an element of a claim is defined in terms of what it does and not what it is, and that element is at the point of novelty, the claim is invalid per Halliburton.

    Halliburton was never overruled except to the extent Section 112, p. 6, authorizes functional claiming in certain forms.

    Deal with it.

    The Office deals with the problem thru BRI, forcing the applicant to add novel structure to the claim. In court, however, courts simply construe such claim language to cover the corresponding structure. For some reason, defense attorneys never raise the “functional at the point of novelty” defense (invalid under Section 112, p. 2). One has to wonder why? (A partial problem could be whether the functionally defined element is the point of novelty.)

  61. pingaling Why do you keep falling back to some misguided notion that my work must be along the lines of the bad facts here

    Is that a rhetorical question, pingerdoodie?

  62. at the point of novelty

    Iz that like Egyptian Goddess “point of novelty” or more like No Claim Dissection “point of novelty” ?

    (and yes, I do know that Egyptian Goddess is a Design Patent case).

  63. Do you guys even understand the whole point behind Section 112, p. 6? It is about functional claiming at the point of novelty.

    Now, think about that for just a second.

  64. Lulz, whatever on earth makes you think that I “can’t get hired”? The fact that I’m not? Lulz. JDtard, there is more to life than pursuing jobs in the legal field. I only went to the one interview because they came to me. Be clear, I sat on my arse and did nothing, they approached me. And they approached me under false pretenses. I think they looked into me because I just happened to update my resume on Monster.

  65. “What will never cease to amaze me is that people like this can even get hired by firms in the first place.”

    But you can’t get hired. So what does that say about you?

  66. “LOL – what are the odds that “the tard” is one of the very same commenters who advocated the “PTO must hold my hand” approach to prosecution?

    I’m thinking close to 100%.”

    I know right? And he’s over at All things Pros too.

    “And the best part is: more laughs are surely to come.”

    I KNOW. Great isn’t it? IV plainly understands the importance of keeping me more than adequately entertained!

    The question is though, will it be a denied request for rehearing or will it be another case? Whichever of the two it is, will they argue about their burden of persuasion so we can hear the court’s technical analysis of why that argument is just as much failsauce as the arguments here?

    What will never cease to amaze me is that people like this can even get hired by firms in the first place. I mean sure they’re pros at whining, but wouldn’t a firm be a little more thorough in checking out how competent their attorney is?

  67. Ned,

    Conflate much?

    You really should just come out and admit that you are clueless regarding means plus claiming and 112 paragraph 6.

  68. Andy Dufresne: “How can you be so obtuse?

    Warden Samuel Norton: “What? What did you call me?

    Andy Dufresne: “Obtuse. Is it deliberate?

    I’m not going to say otherwise simply because my opinion may coincide with Malcolm and 6. I hardly think I’m keeping company with them simply by calling a spade a spade.

    …Your incessant whining about some perceived failure…

    …You should spend less time worrying about who you’re “keeping company” with and more time making sure you’re not doing sh!tty work like was done in this mess.

    The point is not about this particular application getting shot down. You seema to hava problema witha the-a Englisha. Why do you keep falling back to some misguided notion that my work must be along the lines of the bad facts here – Did you somehow miss my first post? the next fifty? Is it deliberate?

    Keep jumpin to (mis)conclusions and keep bein obtuse, chowderhead. And it aint like 6 and Sunshine be talkin about the facts of this particular case – in case ya missed it too – 6 be tryin (again, painfully again) ta be sayin what is and what is not law. That be the company ya be keepin!

    Maybe someday you will realize what I be talkin abouts. Maybe, doubtful, but maybe.

  69. probably just because he’s right.

    Mere conclusory statements are not enough.

    Now where have I read that before?

  70. “The decision is far too mild as far as I’m concerned. J. Linn was far too nice to these dolts. They deserved a much harsher rebuke in my opinion.”

    Agreed.

    As I mentioned in another thread, Rob Sterne once put on a skit at the AIPLA where he represented a mock firm known as “Dewey Cheetam and Howe.”

    I suspected at the time he was being only half facetious. The irony of his being lead counsel in this case!

  71. 6 : Of course this is not the lawl, but try telling them that. They have this entire construct of what is supposed to be happening in prosecution which they’ve constructed from various decisions, In re Oetiker, In re VanyawhogivesadamwhatNewmansays and a few others. In fact, the tard arguing in this case for the appellant cited a few of those cases. Note that this breed of tard feels “entitled” to this type of hand holding, which could include a claim construction if they subjectively feel as if the office should have had to have made one to be clear. And they feel this way because they supposedly “paid for it”. Indeed, the tard arguing in this very case brought that exact phrase into his whining.

    LOL – what are the odds that “the tard” is one of the very same commenters who advocated the “PTO must hold my hand” approach to prosecution?

    I’m thinking close to 100%.

    And the best part is: more laughs are surely to come.

  72. Does anybody remember Donaldson? There the PTO argued that “broadest reasonable interpretation” allowed the office to read MPF claims on any prior art that performed the recited function. The Feds held that section 112, paragraph 6, applied even during prosecution. This allowed the patent applicant to argue the details of the corresponding structure in response to a claim rejection.

    This case reminds me a lot of Donaldson. Here the claim term at issue was a functional expression modifying a noun, “controller.” The patent office read the claim on a piece of prior art that had a controller which nominally performed the recited function. In response, applicant began arguing the details of the corresponding structure. Both the Board, and the Feds seem to hold that the details of the corresponding structure could not limit the claim language, and therefore the examiner’s construction of the claim term was proper.

    In court, such functional expressions are construed to cover corresponding structure regardless of section 112, paragraph 6. We discussed this particular issue in a blog post here on Patently O within the last week. I can see a legitimate argument by the applicant here that when a claim term is functionally expressed, that section 112, paragraph 6, applies regardless of the formalities of that statute. If this were to become accepted, the applicant’s argument about the corresponding structure would have been proper.

    But for those of you who know me, I have argued ’til I am blue in the face that Donaldson was wrongly decided and that the position of the patent office on appeal in that case was the correct position. Section 112, paragraph 2, commands that the claims be clear and define over the prior art by identifying the invention. If a claim literally reads on the prior art, as do means plus function claims in many cases, such claims cannot, within their four corners, define the invention clearly if resort must be made to the specification to find novel structure.

  73. “I never said that I would respond like the dolts here AFTER the burden’s been shifted”

    The burdens were met and shifted in 10/770,072. If you can’t see that, you’re as dense as the dolts who pursued this appeal right off the cliff.

  74. I am grateful for the work that David and Ron have done, and will continue to do. I’ve met and spoken with David a few times. I wouldn’t say I was keeping company with him. He’s a great advocate and has actually accomplished quite a bit for his peers in the patent bar. I can’t say the same for the bozos that pursued this appeal.

    I’m not worried about my reputation with the crowd on this site. This appeal was a POS. The work done by the prosecuting attorney on the application was a POS. I’m not going to say otherwise simply because my opinion may coincide with Malcolm and 6. I hardly think I’m keeping company with them simply by calling a spade a spade.

    As I explained to Les, those of us actually trying to do this practice day in and day out were done a disservice by these dolts. They’ve wasted a lot of the BPAI’s time and the Fed. Cir.’s time. For what?

    Your incessant whining about some perceived failure of J. Linn’s decision doesn’t make me want to keep company with you either. The decision is far too mild as far as I’m concerned. J. Linn was far too nice to these dolts. They deserved a much harsher rebuke in my opinion.

    You should spend less time worrying about who you’re “keeping company” with and more time making sure you’re not doing sh!tty work like was done in this mess.

  75. nonsense spouted by David Boundy, Ron Katznelson, and many others.

    Lolz on both 6 and wtvlfdt.

    Wtvlfdt, answer yourself this – whose company would you keep, knowing that your reputation is made by the company you keep: 6 And Malcolm, or David Boundy, Ron Katznelson, and many others (including yours truly).

    I will give you, oh about .00000005 seconds to decide.

    You really should only need about half that time.

  76. and Rule 104 so as to articulate the reason for rejecting the claim, the examiner has established a prima facie case and shifted the burden to applicant.

    When the burden’s been shifted to you, feel free to respond like these dolts did. See how far that gets you.

    Still moving goal posts there chowder. Please note that before the burden switches, both production and persuasion must be met.

    Ya seem ta have a difficult time acknowledging this simple fact and remain obtuse about it. Must hurt you to see that badge O honor ripped from your chest.

    When the burden’s been shifted to you, feel free to respond like these dolts did. See how far that gets you.

    Tell me again exactly when (and why) that burden shifts there pal – dont forget about the persuasion factor. After that ya can paste up all the misleading things about what I actually done say ya want (hint – I never said that I would respond like the dolts here AFTER the burden’s been shifted).

    The rest of us will get back to the business of getting our clients’ applications allowed

    Jump ta conclusion much still?

    Ya be aiming to join the horsemen ranks since my main man be MIA?

  77. “BZZZT – wrong. Proof is not mere production. Like I done observe way way long ago (OK long ago in Sunshine Med time) it gotta be correct production. ”

    See, called it. He beat me to the post button though.

    Even in the face of certain defeat, indeed, after having already been soundly defeated, pingerdoodle still fights on.

  78. “Once the examiner has done that in an OA, the examiner has met the burden and shifted it to the applicant. Once the burden has been shifted, the applicant must come forward with arguments and/or evidence sufficient to rebut the prima facie case. ”

    That’s where pingerdoodle will disagree. According to his view the examiner hasn’t NECESSARILY shifted the burden just yet in that situation. According to their way of viewing the situation, so far as I understand it (which, again, I stress, is quite difficult due to the tardation involved) the OA has to be subjectively “good”, in so far as it holds applicant’s hand from point a to point b in their understanding of the rejection so much so that there is no chance for the applicant to misunderstand anything within. That is, if the applicant cannot understand whatever the examiner wrote, then the prima facie case has not been made. Regardless of what an objective inquiry into the subject would yield. Indeed they feel that they’d be shooting arrows in the dark at a position the office must be taking but which they cannot understand or “find” in the dark.

    “David Boundy on the All Things Pros ”

    Lulz, chief amongst the Oetikertards. This decision turns his nonsensical theories of prosecution on their heads. Which is one of the primary reasons I lol so heartily.

    Wonder where he is? Guess he only pops up when the lawl is suitably murky for him to make some crackpot interpretationlols.

  79. “Proof is not mere production.”

    I never said it was. Nice straw man.

    The examiner can’t meet the ultimate burden of proof on the first OA because the ultimate determination of patentability has to be made on the totality of the record (i.e. including the arguments and/or evidence submitted by the applicant).

    In the first OA on the merits, if the examiner supplies sufficient notice as required by Section 132 and Rule 104 so as to articulate the reason for rejecting the claim, the examiner has established a prima facie case and shifted the burden to applicant.

    When the burden’s been shifted to you, feel free to respond like these dolts did. See how far that gets you.

    I’m sure some appellate lawyer will be glad to take your money to chase some windmills. That John Marshall guy’s convinced he could have won. Give him a call. The rest of us will get back to the business of getting our clients’ applications allowed.

  80. prima facie case of unpatentability in the first OA on the merits (i.e. in meeting the burden of production)

    BZZZT – wrong. Proof is not mere production. Like I done observe way way long ago (OK long ago in Sunshine Med time) it gotta be correct production.

    And nice goal post moving equipment there with the “conclusory nonsense” stuff – nice of ya ta introduce that now.

    If you can’t figure out when you have the burden during prosecution, you’re hopeless.

    You have that only after the prima facie case has been made – that’s why they call it “burden shifting” – Nice of ya not ta respond to that question earlier.

    Wear that badge O honor with pride – another attribute ya be pickinup from 6 and Malcolm. What a chowderhead.

    try again chuckles.

  81. I am well aware that the burden of proof (i.e. the burden of production and the burden of persuasion) remains on the examiner throughout prosecution. However, in establishing a prima facie case of unpatentability in the first OA on the merits (i.e. in meeting the burden of production) all that is required from the examiner is that the examiner address every limitation in the claim and explain how the reference(s) meet the claim (for anticipation – how the reference discloses the identical invention and for obviousness – how the reference when modified, or combined with another reference(s) includes all the claim limitations and provide an articulated reasoning with rational underpinning for the modification and/or combination).

    Once the examiner has done that in an OA, the examiner has met the burden and shifted it to the applicant. Once the burden has been shifted, the applicant must come forward with arguments and/or evidence sufficient to rebut the prima facie case. As was so ably discussed by David Boundy on the All Things Pros site, when a party has the burden, conclusory nonsense (e.g. “It’s different!!!!” with ZERO explanation) ain’t gonna cut it.

    After considering all of the applicant’s arguments and/or evidence, and ignoring conclusory nonsense, if the examiner is still of the opinion that the claims are not patentable, the examiner must establish, by a preponderance, that the claims are not patentable.

    Your whining that the court didn’t go into a full scale exposition of the two parts of the burden of proof is really reaching. If you can’t figure out when you have the burden during prosecution, you’re hopeless. If you can’t figure out how to argue to the BPAI that the examiner has not established the unpatentability of the claims by a preponderance (i.e. has not met the ultimate burden of proof), then you’re beyond hopeless.

    Being accused of being “deliberately obtuse” by an id!ot who writes even more childishly than 6 is a badge of honor I wear proudly.

  82. I’m not going to bother to set it forth in full. I will let pingerdoodle et al. do that. Ask Broje, she’ll no doubt be happy to set forth the nonsense spouted by David Boundy, Ron Katznelson, and many others. Besides I might mess it up, it is hard to comprehend fully the retardation coming from the standard issue Oetikertard. But it goes something like this. The office bears the burden of producing evidence and putting the applicant on notice, as well as a burden of persuasion. The later of which your standard issue tard will interpret to mean, in pratice, that the examiner has to have held their hand throughout the entirety of rejecting every last claim. They would love no doubt to have claim constructions in some cases put on the record, but I doubt if they feel like they’re usually strictly required. But they do feel like the office will have not met this burden if, ultimately, the PTO is wrong on the merits. That is, they will not have met their burden of persuasion if they’re simply wrong.

    That’s the basics, I’m sure their retardation goes much deeper than that, and I haven’t touched on every single point, specifically all the other things the office might do to have failed to meet this or that burden, but bottom line, unless there is no possible way for them to f up understanding the office action then it is the office’s fault. In other words, in short, the office bears the burden of being their kindergarten teacher.

    Of course this is not the lawl, but try telling them that. They have this entire construct of what is supposed to be happening in prosecution which they’ve constructed from various decisions, In re Oetiker, In re VanyawhogivesadamwhatNewmansays and a few others. In fact, the tard arguing in this case for the appellant cited a few of those cases. Note that this breed of tard feels “entitled” to this type of hand holding, which could include a claim construction if they subjectively feel as if the office should have had to have made one to be clear. And they feel this way because they supposedly “paid for it”. Indeed, the tard arguing in this very case brought that exact phrase into his whining.

  83. Nope, I didn’t say “tend to do”. I told you straight up what in fact they do tend to do. Tard.

    Med Check Med Check for 6 – say hey to Mikey while ya be in the clinic there 6.

  84. f the examiner addresses every single element/feature of your claim and provides a cite to a portion of a reference where that element/feature is allegedly found, then the examiner has, for all intents and purposes, established a prima facie case.

    Nice – but aint what i was talking about, as such may satisfy both the burden of production and the burden of persuasion.

    get it?

    The fact that you disagree with the examiner’s determination

    Jump to conclusions much? Nowhere have I indicated such.

    get it?

    And stop being so da_mm obtuse already. It be like ya purposefully missing the point that the CAFC messed up by only putting forth half the prima facie burden requirement.

    Or do you not get that there are two portions to the requirement?

    get it?

  85. “That was the deal before this decision, and that is the deal after this decision. Zero change in the law. Take a look at Rule 104.”

    Yeah, now your interpretation is clashing with pingerdoodle et al’s big time. I’m sure he’ll point out how in just a minute if he’s feeling up to it today.

    “The fact that you disagree with the examiner’s determination that the “controller” of Kalnitsky corresponds to the “well-charge-level controller” of claim 1 does not mean that the burden has not been shifted.”

    You try to tell people something like this but it just goes over their heads.

    ” It has been shifted.”

    Yeah, can’t wait until pinger gets back to us on this. But don’t expect that he’ll be warming up to your position.

    “And if you don’t respond, or if you respond with conclusory nonsense like “The controller of claim 1 is different!” with ZERO explanation of how the CLAIMED controller is different from the Kalnitsky controller, then you lose. ”

    Oh, no no no, according to their interpretation you actually have to argue that “a prima facie case has not been made lol!!!!111111″ but if you do, then you’re golden, and in addition you can expect a full de novo review on appeal to the board where they will promptly reverse the rejection regardless of the substance. Lulz.

    I wonder if pingerdoodle bothered to listen to the oral arguments just yet? They touch on Ex parte Frye and what the office’s official interpretation of its own ruling is. Funny enough, it happens to be exactly what I put forth on this site and others in direct contrast to your standard toolbag/Oetikertard’s views.

  86. As I explained to you, if we could bring Daniel Webster, or Clarence Darrow, or Johnny Cochran, back to life, they weren’t going to win this appeal because it had ZERO merit.

    What do you not understand about that?

  87. What exactly do you think my, or any other allegedly delusional practitoner’s, interpretation of Oetiker is, or was before this decision?

  88. Who brought up claim construction? Don’t follow the path of the tard wtfvlfdt, keep your head high above the tard, use your brain prior to speaking.

  89. If the examiner addresses every single element/feature of your claim and provides a cite to a portion of a reference where that element/feature is allegedly found, then the examiner has, for all intents and purposes, established a prima facie case. That was the deal before this decision, and that is the deal after this decision. Zero change in the law. Take a look at Rule 104.

    The fact that you disagree with the examiner’s determination that the “controller” of Kalnitsky corresponds to the “well-charge-level controller” of claim 1 does not mean that the burden has not been shifted. It has been shifted. And if you don’t respond, or if you respond with conclusory nonsense like “The controller of claim 1 is different!” with ZERO explanation of how the CLAIMED controller is different from the Kalnitsky controller, then you lose.

    Get it?

  90. It’s called a credit card. They are easy to obtain. They are offered to typical “pros”, e.g., a high school graduate with a substantial existing debt from, say, tuition fees.

  91. Prior to this doomed appeal, I don’t recall anybody’s interpretation of Oetiker being that the examiner was required to make an explicit claim construction in order to establish a prima facie case. It certainly was never my interpretation. Do you have some names and some examples of people advocating this interpretation?

    Let me guess, you don’t.

  92. You can’t open the envelope, read the OA and say, “Hmm, the examiner hasn’t established a prima facie case. I’ll just sit back and wait for the Letters Patent to arrive in the mail.”

    Nice straw too – as this is not what I said.

  93. Rule 111(b) requires you to respond. Regardless of whether the examiner has established a prima facie case, i.e. shifted the burden, or not. You can’t open the envelope, read the OA and say, “Hmm, the examiner hasn’t established a prima facie case. I’ll just sit back and wait for the Letters Patent to arrive in the mail.”

    You have to respond.

    If you don’t understand that, I can’t help you.

  94. “The office has an obligation to do its job properly. Why do supervisors sign office actions like the ones you describe. Can you really rise to the level of supervisor and not know those rejections are improper? Can you rise to the level of primary and not know they are improper? Why is it the applicants responsibility to train examiners?”

    Attorneys have an obligation to do their jobs properly. Why do attorneys sign off on responses like the ones in this case? Can you really rise to the level of partner and not know these responses are improper? Can you rise to the level of supervising attorney and not know they’re improper? Why is it 6′s responsibility to train attorneys?

    I’ll tell you why lester jester. Because incompetence, igno rance and reta rdation exists on both sides. That’s why.

  95. Yeah, just not your re tarded interpretation. Which actually never was the lawl anywhere but in your delusional head and a few other delusional heads that frequent these parts on occasion.

  96. I didn’t say that less well off applicants couldn’t do the same thing. I merely mentioned was the ones with $$$ backing them tend to do.

  97. Talk about failing

    Ya might then care to explain what you think the actual switch in burden means, Chowderhead.

  98. That was not the problem. It was not even a problem.

    Daniel Frigging Webster himself couldn’t have saved this POS appeal.

    The problem, the ONLY problem, with this appeal was that it had ZERO merit on the facts and on the law.

  99. Rule 111(b) requires you to point out all of the errors in the OA. If one of the errors is the failure to establish a prima facie case, then you have to respond and explain that error.

    Talk about failing. You and Les must be partners in the same firm or something.

  100. One problem with this appeal was that it was argued/briefed by patent prosecutors, not attorneys with significant appellate experience before the Federal Circuit.

  101. with $$$ backing them

    Lolz at 6 – probably dont even realize the humor in his post.

    Sport O’ Kings – gotsta return to them glory days when patents only (rightfully) belonged to the Kings – da_mm serfs tryin to have patents…

    /off sarcasm.

  102. If I want… I file a continuation.

    Yep – used to be ta file an RCE (in the O’l gravy train days).

    Now its fiel a continuation – aintcha glad now that Tafas prevailed and allows ya to protect your clients rights?

  103. Good heavens but I’m beginning to agree with Mooney about all the Chicken Little prosecutors on this site.

    Always a sign that your logic must be checked.

    For example:

    We’ve had this for years. It’s called Rule 111(b).

    Yes, this applies – but only when the burden has shifted – when the prima facie case has been made – not until.

    Thus your answer here FAILS.

  104. lulz, I’m only happy that you Oetikertards were wrong lol. My OA’s explain themselves just fine unless I make a typo or some sht. Like maybe 1 in 100 I have come back with a prosecutor telling me they don’t think the rejection is clear. And I’ll admit, I’m not perfect, sometimes I’m a little rushed and don’t go out of my way to write a couple of pages to describe what is going on when someone who is not very good at prosecution could be confused by my not doing so.

  105. “Whether I can or not is not the issue. I shouldn’t have to.”

    Lester Jester doesn’t want to do his job by jove. I believe it is time for a career change for the ol’ lester.

  106. “[b]THE PROBLEM IS[/b] , 80% of the time, the reason for the citation is not clear.”

    That’s because you’re a tard lester jester. And because you are not, as the judges said in this case, familiar with the basics of prosecution.

    “Therefore the judge has struck a mighty blow against improving the patent system.”

    Indeed, it should only take a few more sensible decisions like this to cut down the backlog by several hundred thousand. I note the outstanding effect Ex Parte Miyazaki has had for my prosecutions. I probably have like 60% fewer RCE’s/appeals.

  107. No, you shouldn’t. More than half of the final rejections I see (all of which I try to avoid) end up with me calling the Examiner and figuring out an Examiner’s amendment to obtain the allowance. If I want those broader claims, I file a continuation.

  108. DC Of course, Intellectual Ventures is now one of the largest patent holders in the world and its actions are almost always strategic in nature.

    I now realize that this was a primo example of DC’s dry and genius sarcasm.

  109. View My question is: Why are you upset at the Court and not the prosecuting attorney and the applicant that pursued this heaping steaming pile of dog crxp all the way to the Fed. Cir.? They’re the bad guys here, not any Judge or APJ or examiner.

    Direct your frustration where it belongs.

    You’re telling that to Les?

    Newbies are funny.

  110. View The OA’s in 10/770,072 are amongst the best I’ve seen in 20+ years doing patent prosecution. The prosecuting attorney’s responses are amongst the worst. Lots of pages of useless citations, but no analyis or explanation of the patentable differences between the claim and the prior art other than “It’s different!” when the differences being relied on aren’t even recited in the claim.

    Do you analyze many prosecution histories? Because the description you provide is not unusual at all.

    There are a lot of incompetent patent prosecutors out there. They mislead their clients into believing that they can get anything they want, and then they bill them for unnecessary appeals. And then they come to this blog and complain that the PTO is anti-innovation, etc.

    I can only imagine what happens when these same prosecutors attempt an Examiner interview. In fact, I don’t have to imagine. I’ve seen such prosecutors at work. They do nothing except repeat things like “C’mon, you can’t mean that!” and “This is really important to my client! C’mon!”

    To all young associates out there: if you say this behavior from a partner, get the hxll out of there and don’t look back.

  111. “The question this case answers is whether the examiner or the applicant must blink first and explain their REASON for their divergent beliefs. We now know that the examiner wins. Not earthshaking, but this does put limits on what constitutes a prima facie case.”

    We’ve had this for years. It’s called Rule 111(b).

    Good heavens but I’m beginning to agree with Mooney about all the Chicken Little prosecutors on this site.

  112. I don’t know whether the appellant here specifically argued that the examiner had to spell out his claim construction in so many words in establishing a prima facie case, but I can assure you that where construction of a claim term becomes an issue in reexaminations, the examiners actually give their construction in writing. They even lay out the requirements the applicant must meet for them to consider the applicant’s alternative construction.

    Unfortunately, one normally gets this information in writing as part of a final office action after it becomes clear that the issues dividing the parties is one of claim construction.

  113. If your claim truly distinguishes over the art, go ahead and appeal.

    If your claim recites a “controller operably coupled to…” and your argument is, “Well my controller is DIFFERENT than the prior art because it does X, Y, and Z and the prior art doesn’t” but you don’t actually CLAIM that your controller does X, Y, and Z, then you may want to reconsider the wisdom of filing an appeal and looking like an id!ot.

  114. “Why do supervisors sign office actions like the ones you describe.”

    Because there are no consequences for signing an OA that rejects every claim, regardless of how crappy the OA is. We’ve been over that before numerous times.

    “Can you really rise to the level of supervisor and not know those rejections are improper?”

    Yes. In fact, not knowing these rejections are improper is one of the primary qualifications for becoming an SPE. Again, we’ve covered that.

    “Can you rise to the level of primary and not know they are improper?”

    Obviously, yes. See my answer above.

    “Why is it the applicants responsibility to train examiners?”

    Because who better to do it? Would you rather have the examiners trained by SPE’s who know they can sign any OA without even reading it as long as every claim is rejected, or by people whose profession is the actual practice of law?

    “I’m upset with the court and not the prosecuting attorney because the courts pronouncements are important. The prosecuting attorneys actions can’t be cited against my clients.”

    So the applicants and their attorney act like spoiled, petulant children, and the court tells them, “You’re acting like spoiled, petulant children. Stop it.” and you’re upset with the court?

    I must say, your logic eludes me.

    BTW, there’s a continuation of 10/770,072 pending (12/290,632) and guess what? Claim 1 now actually recites that the well-charge-level controller is configured to substantially continuously maintain the charge level at a target.

    Maybe this time, if the claim is rejected, the prosecuting attorney will pick up the phone and initiate a little discussion.

    Let’s hope.

  115. Whats worse, is your “sure I did” comes in the form of a FINAL office action. And an examiner this bad wont even read any response I submit after final.

    Should I have to file an appeal?

  116. The office has an obligation to do its job properly. Why do supervisors sign office actions like the ones you describe. Can you really rise to the level of supervisor and not know those rejections are improper? Can you rise to the level of primary and not know they are improper? Why is it the applicants responsibility to train examiners?

    Your position is as….well… you know what your position is…

    I’m upset with the court and not the prosecuting attorney because the courts pronouncements are important. The prosecuting attorneys actions can’t be cited against my clients.

  117. “Whether I can or not is not the issue. I shouldn’t have to.”

    But you do. If you’re doing patent prosecution as a livelihood you’re always going to get the OA that states, “Claims 1-20 are anticipated by Smith. See column 1, line 1 through column 10, line 65.”

    You have to respond to that. You had to respond to that before this decision, and you’ll have to respond to that after this decision.

    If your traversal is on the grounds that the examiner hasn’t complied with 35 USC 132 and 37 CFR 1.104, and the examiner says, “Sure I did. See In re Jung” then you have to respond to that too.

    My question is: Why are you upset at the Court and not the prosecuting attorney and the applicant that pursued this heaping steaming pile of dog crxp all the way to the Fed. Cir.? They’re the bad guys here, not any Judge or APJ or examiner.

    Direct your frustration where it belongs.

  118. wtvlfdt,

    That’s not what the court “pronounced.”

    Dont matta – see teh jubilation from teh likes of 6 and Sunshine. That is what Les is concerned with.

    Why is it that you are missing the tone of his post? Are you being obtuse on purpose?

    then maybe it’s time to consider a career change.

    Equally (perhaps much more so) applicable to those that miss the points you make – from the Office side (like 6) and from the fluffy side (like Sunshine).

    and they remain improper after this decision

    Like I done observe with teh burden of persuasion. The point here is that the court messes this up by not properly putting forth the entire rule. Such laziness above engenders laziness below.

  119. Whether I can or not is not the issue. I shouldn’t have to.

    Examiners asserted that they could issue crappy OA’s before this decision and will issue crappy OA’s after it. This decision is just another thing for them to point to in alleged support of their bureaucratic byzantine position and another thing I have to spend time arguing about.

  120. “My problem is with the pronouncement from the bench, which the office, or at least examiners, will use to support an assertion that all they need do is

    –pasted text from claim element 1–(paragraph 6)”

    That’s not what the court “pronounced.” The court very clearly stated that the examiner needed to explain sufficiently so that the applicant could understand the reason for the rejection. That was the case before this decision, and is the case after this decision.

    “…even if the only relationship between element 1 and paragraph 6 is they both include the a aparticular word, or have even less in common.”

    A lot of crappy OA’s do this. They were improper before this decision, and they remain improper after this decision.

    If an examiner cites this decision to you, you should be able to distinguish it from the facts of the application you are prosecuting. If you can’t, then maybe it’s time to consider a career change.

  121. That may be. You’re right I haven’t reviewed the prosecution history.

    My problem is with the pronouncement from the bench, which the office, or at least examiners, will use to support an assertion that all they need do is

    –pasted text from claim element 1–(paragraph 6)

    even if the only relationship between element 1 and paragraph 6 is they both include the a aparticular word, or have even less in common.

  122. BTW, if you actually reviewed the file history for 10/770,072, there’s no possible way you could say that the examiner did not articulate or explain the rejection beyond a “mere citation.” The examiner gave the applicant all the explanation required, in addition to the cites to the relevant portions of the reference. The problem was the dope prosecuting the case. He was more interested in generating paper than getting the case allowed.

  123. “Therefore, fairness,AND COMPACT PROSECUTION dictates that there be required some ARTICULATION with an emphasis on ARTICULATE explanation for the rejection beyond the mere citation.”

    Compact prosecution is a two way street. If you have any questions about the examiner’s interpretation, pick up the phone and schedule an interview.

    The OA’s in 10/770,072 are amongst the best I’ve seen in 20+ years doing patent prosecution. The prosecuting attorney’s responses are amongst the worst. Lots of pages of useless citations, but no analyis or explanation of the patentable differences between the claim and the prior art other than “It’s different!” when the differences being relied on aren’t even recited in the claim.

    Maybe if the dolt prosecuting the case had spoken to the examiner he would have found out that all of those unclaimed “differences” weren’t being considered as distinguishing over the reference.

    No interview. Not even any apparent attempt to understand the examiner’s position.

    Really crxppy work.

  124. Let’s see if Sunshine can articulate anything substantive to this discussion (grabs bucket of popcorn and sits back).

  125. The judges ruling is fine, ASSUMING that the cited column and line numbers actually say something related to the subject claim element.

    [b]THE PROBLEM IS[/b] , 80% of the time, the reason for the citation is not clear.

    Therefore, fairness,AND COMPACT PROSECUTION dictates that there be required some ARTICULATION with an emphasis on ARTICULATE explanation for the rejection beyond the mere citation.

    Therefore the judge has struck a mighty blow against improving the patent system.

    sigh….

  126. Anybody want to speculate on the cost of the appeal? “ROBERT G. STERNE, Sterne, Kessler, Goldstein & Fox, PLLC, of Washington, DC, argued for appellants. With him on the brief were JON E. WRIGHT and BYRON L. PICKARD. Of counsel on the brief were CLARENCE T. TEGREENE, S. CRAIG ROCHESTER, and ROY P. DIAZ, Intellectual Ventures, Management, LLC, of Bellevue, Washington.”

  127. “Per In re Morris, the applicant cannot limit a claim term by reference to the specification unless the claim term is defined in the specification or used consistently in a manner such that no other interpretation can be made.”

    So if you know this, why don’t you do it? You’re constantly on here saying you have no idea how the examiner is going to construe your claim. If you define the terms in the spec and/or use them consistently in a manner that rules out other interpretations, you have determined the BRI. If the examiner isn’t giving the claims the BRI that you’ve established, you can try to persuade the examiner of the error, and failing that appeal.

    What is your problem?

  128. Weak facts combined with Herr Linn and Herr Dyk made for a bad outcome.

    Seriously, if I’m taking a case to the Federal Circuit and I get the combination of Linn and Dyk on the panel, I would file a motion to dismiss the appeal.

    Still, it isn’t all bad because what the Fed Circuit stated was OK is something Examiner rarely does, which is specifially identify within the prior art ALL the claim limitations. I looked at the Final Office Action that was appealed (Application No. 10/770,072), and I have to give the Examiner some credit, as this was one of the better Office Actions I have seen in quite some time.

    IMHO, whoever at Intellectual Ventures made the decision to take this case to the Federal Circuit made a bad decision. I can randomly pick 10 applications currently in prosecution and it is safe to say that I can find at least 8 with better fact patterns. Also, it wasn’t as if an amendment to the claims was going to kill the patent scope. Applicant already argued that the “well-charge-level controller” has a specific meaning (i.e., “X”). Prosecution history estoppel would have limited them to that argued meaning so it wouldn’t have been a big deal to amend the claim to explicitly recite X.

    If you are going to battle the USPTO at the Federal Circuit, pick a case in which the Examiner didn’t do their job. Really, this case was doomed from the start.

    One last thing, this is a lesson to any patent prosecutor (one that I learned a long time ago) — don’t go to the BPAI on a weak claim construction issue – guaranteed failure. You better have your claim term defined in the specification, extrinsic evidence to rely upon, and/or a very detailed argument. Otherwise, you will lose.

  129. I think that Jung’s purpose was to try to get the Board or Federal Circuit to agree that the examiner, rather than the applicant, has the first duty to articulate why a prior art feature meets a claimed feature. Here, the examiner alleged that a certain feature in the prior art was the same as the claimed well-charge-level controller. Jung disagreed but in the claim interpretation pissing match wanted the examiner to be the first to construe the claimed feature and point out the similarities. I think Jung believed that an applicant should not have to make the first move when the examiner has failed to “bridge the differences” because the examiner is burdened with establishing a prima facie case. Theoretically, once Jung stated applicant’s belief that the prior art feature and the claimed feature were different, Jung expected (wanted it to be the case) that the examiner would be required to respond with and explanation.
    Consider an example. Applicant claims a widget with a red cover. The examiner cites prior art describing a widget with a blue cover and says that the prior art widget anticipates the claimed widget without explaining or even mentioning the difference in color. Applicant responds by stating, without explanation, that the prior art widget is different. The question this case answers is whether the examiner or the applicant must blink first and explain their REASON for their divergent beliefs. We now know that the examiner wins. Not earthshaking, but this does put limits on what constitutes a prima facie case.

  130. RR,

    See my earlier observations.

    Also note their confirmation, as 6 takes the opposite view – typically a sure sign.

  131. Not the greatest facts for a section 132 challenge. A lot of times you get examiners that summarily reject all dependent claims without pointing out where they see the disclosure relied upon. Those ones are more ripe for challenge.

  132. Round, agreed. The controller of the reference performed the functions of the controller recited in the claim. The argument on appeal argued that the referenced controller did not perform a number of functions of the claimed controller, all of which were described in the specification and none of which were described in the claim.

    Perhaps in court, one can get away with incorporating limitations from the specification into the claim to distinguish over prior art, but certainly not in the patent office, where claim construction is according to the “broadest reasonable interpretation” standard. Per In re Morris, the applicant cannot limit a claim term by reference to the specification unless the claim term is defined in the specification or used consistently in a manner such that no other interpretation can be made.

    I don’t see, based on the summary given to us by the Federal Circuit, either of these arguments being made as to why the claimed controller had to be limited to the details of the corresponding structure described in the specification.

  133. “Of course, to establish a prima facie case of anticipation the Office must show that the elements of that concept have
    been preliminarily established, i.e., the evidence, unless rebutted, must show that all the elements in the claims of the
    application are set forth, either explicitly or inherently, in the allegedly anticipating prior art reference.”

    See In re Daniel A Gately

  134. I’m sorry, but Mr. Jung was clearly not familiar with MPEP 2111 and the “broadest reasonable interpretation” standard articulated in Phillips. He is trying to get the PTO to do the applicants job of narrowing the claims in view of the prior art.

    However P’O says: “The prima facie case is shown by notifying the applicant of the reasons for its rejections”

    The prima facie case is not shown by the notice itself as suggested in the sloppy statement above, the prima facie case is either made or not and articulated in the notice. The FC acknowledged that the Examiner had set forth with particularly where in the reference the elements of the claims were found.

    This should be a lesson to those that see prosecution as a fungible commodity. Hint: it’s not.

    Some might walk away from this case thinking that if a notice and reasons are given by the Examiner, then the p.f. case cannot be challenged. More estute practitioners would recognize that an allegation that a prima facie case was not made out could still be made.

  135. Here is a similar story

    The Court of Appeals for the Federal Circuit (“CAFC”) held in 1995 that “the interpretation and construction of patent claims, which define the scope of the patentee’s rights under the patent, is a matter of law exclusively for the court.” This definitive statement from Markman v. Westview Instruments (“Markman I”) affects nearly all patent infringement litigation in the United States, because claim construction must occur before an infringement or validity analysis can be performed. Claim construction involves “determining the meaning and scope of the patent claims.” In Markman I, a majority of the CAFC held that “because claim construction is a matter of law, the construction given the claims is reviewed de novo on appeal.” An important result of Markman I has been the emergence of the “Markman Hearing” where the court construes the claims at issue in a hearing separate from the rest of the litigation to determine their meaning.

  136. “What is one possible “strategic” explanation for this apparent massive FAIL?”

    That IV appreciates the importance of keeping me WELL ENTERTAINED! And O M G their oral arguments are better than the latest episode of Archer. And the latest episode of Archer was pretty fin good. Terms of Enrampagement lol.

    MUAHMUHAWHAW!

    Come all ye Oetikertards, partaketh in the merriment!

    Also

    link to tvfanatic.com

  137. Of course, Intellectual Ventures is now one of the largest patent holders in the world and its actions are almost always strategic in nature.

    What is one possible “strategic” explanation for this apparent massive FAIL?

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